Ex Parte Herman

Board of Patent Appeals and Interferences

Feb 3, 2011

10962477 (B.P.A.I. Feb. 3, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/962,477 10/13/2004 Robert Alan Herman 038519-0111 9714
22428 7590 02/03/2011
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
FORMAN, BETTY J
ART UNIT PAPER NUMBER
1634
MAIL DATE DELIVERY MODE
02/03/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT ALAN HERMAN
__________

Appeal 2010-010175
Application 10/962,477
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a system
for analyzing an aerosolized biological particulate sample. The Examiner

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-010175
Application 10/962,477

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has rejected the claims as anticipated and obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses “a continuous system for capturing,
washing, processing, and analyzing airborne biological particles” (Spec. 1,
¶ 0002). The “system includes a strip of material, a first filter for capturing a
biological particulate including a nucleic acid, and at least one reagent. Each
of the first filter and the reagent are disposed and extend longitudinally on
the strip” (id. at 3, ¶ 0008).
Claims 1-6, 8-18, and 22-26 are on appeal. Claims 1 and 22, the only
independent claims on appeal, read as follows:
1. A system for analyzing a sample, comprising:
(a) a strip of material;
(b) a first dry filter layer for capturing an aerosolized biological
particulate, said first dry filter layer disposed and extending longitudinally on
the strip; and
(c) at least one reagent layer different from said first dry filter layer
comprising reagent for analysis of the aerosolized biological particulate, said
reagent layer disposed and extending longitudinally on the strip,
wherein the first dry filter layer and the reagent layer extend
substantially continuously along the length of the strip, and
wherein the aerosolized biological particulate comprises a nucleic
acid.

22. A system for analyzing a sample, comprising:
(a) a strip of material;
(b) a first dry filter layer for capturing an aerosolized biological
particulate, said dry filter having a first major surface and a second major
surface opposite the first major surface, said first major surface adjacent to a
first major surface of the strip; and
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(c) a reagent layer comprising at least one reagent for analyzing the
biological particulate, said reagent layer having a first major surface adjacent
to the second major surface of the first dry filter.

The claims stand rejected as follows:
• Claims 1-3, 12-13, and 22-26 under 35 U.S.C. § 102(e) in view of
Lee;2
• Claims 1-3, 5-6, 8-13, and 16-18 under 35 U.S.C. § 103(a) in view
of Lee and Grow;3 and
• Claims 4 and 13-15 under 35 U.S.C. § 103(a) in view of Lee, Grow
and Lehmann.4
I.
Issue
The Examiner has rejected claims 1-3, 12-13, and 22-26 under 35
U.S.C. § 102(e) as anticipated by Lee.
The Examiner finds that Lee discloses a system for sample analysis
that comprises “a strip of material (i.e. porous membrane #122), a first dry
filter layer … (i.e. mesoporous membrane #124)” (Answer 3), and “at least
one reagent layer on the dry filter layer (i.e. active surface, #126)” (id. at
3-4).
Appellant contends that Lee does not disclose the reagent layer
required by claims 1 and 22 (Appeal Br. 5-6).

2 Lee, WO 03/049840, June 19, 2003
3 Grow, US 5,866,430, Feb. 2, 1999
4 Lehmann, US 2004/0142338, July 22, 2004
Appeal 2010-010175
Application 10/962,477

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The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Lee discloses the reagent layer of claims
1 and 22?
Findings of Fact
1. Lee discloses a “process and apparatus … for the collection of
biological materials from air. Collection and separation devices utilize a
novel membrane structure (120) formed from a functionalized inorganic
mesoporous membrane (124) supported by porous substrate.” (Lee,
abstract.)
2. Lee discloses that “airborne biological materials may be collected
on a surface of the mesoporous membrane as air … passes through the
membrane structure” (id. at 7: 14-17).
3. Lee discloses that the “mesoporous membrane is then wetted, and
the collected biological materials are extracted or otherwise removed” (id. at
col. 7, ll. 17-19).
4. Lee discloses that the “extracted materials can be transferred to a
detector and analyzed” (id. at 7: 20-21).
5. Lee discloses that the “active surface of the mesoporous membrane
is preferably derivatized with an organic material, preferably … a
hydrophilic polymer monolayer, to facilitate removal of sample components
from the surface and/or to prevent adhesion of sample components to the
membrane surface” (id. at 2: 32 to 3: 2).
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Application 10/962,477

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Analysis
Both claim 1 and claim 22 are directed to systems for analyzing a
sample that comprise a reagent layer containing a reagent for analyzing a
biological particulate.
The Examiner interprets the recited “reagent layer” to read on Lee’s
disclosure of a hydrophilic polymer that coats at least a portion of the
mesoporous membrane (Answer 3-4). The Examiner reasons that “the
phrase ‘for analysis’ is a recitation of intended use” (Answer 12) and the
Specification does not define the term “reagent for analysis” or provide any
specific examples of the reagent (id.).
Appellant argues that Lee does not teach the claimed reagent layer
(Appeal Br. 5). Appellant argues that Lee’s hydrophilic polymer “cannot
play any role in the analysis [of the aerosolized biological particulate]
because the particulate is washed off of the hydrophilic polymer before any
analysis is conducted” (id.). Appellant argues that “one of skill in the art
would not understand a ‘hydrophilic polymer’ coating used to prevent
adhesion to constitute a ‘reagent’ because the polymer does not facilitate nor
is it involved in any chemical reaction” (id.).
We agree with Appellant that the Examiner’s reading of the claim
language is broader than would be considered reasonable by a person of
ordinary skill in the art. Although the Examiner is correct that the statements
that the reagent is “for analysis” or “for analyzing” are statements of
intended use, these statements still limit the reagent to those that are capable
of being used as recited; i.e., to analyze, or characterize, a biological
particulate. The Examiner has not adequately established that those of skill
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Application 10/962,477

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in the art would interpret a “reagent for analysis” or a “reagent for analyzing”
to encompass a component that is merely used to capture a biological
particulate, but not to characterize the particulate.
Conclusion of Law
The evidence of record does not support the Examiner’s finding that
Lee discloses the reagent layer of claims 1 and 22.
II.
Issue
The Examiner has rejected claims 1-3, 5-6, 8-13, and 16-18 under 35
U.S.C. § 103(a) as being obvious in view of Lee and Grow. The Examiner
has also rejected claims 4 and 13-15 under 35 U.S.C. § 103(a) as being
obvious in view of Lee, Grow, and Lehmann. Because the same issue is
dispositive with respect to both rejections, we will address them together.
The Examiner finds that Grow discloses a tape comprising a porous
filter that is coated with a bioconcentrator, or reagent, that “is useful for
capturing cells, spores, toxins, viruses or microorganisms” (Answer 5-6).
The Examiner relies on Lee as disclosing that “multilayer filter supports for
aerosolized particle capture were well known and routinely practiced in the
art” (id. at 6). The Examiner concludes that it “would have been obvious to
one of ordinary skill in the art … to modify the filter support of Grow et al
by adding the support membrane of Lee … for the benefit of preventing
membrane tearing” (id.).
Appellant contends that Grow and Lee would not suggest the claimed
“reagent layer” (Appeal Br. 7).
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The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the combination of Grow and Lee
would have made obvious the system of claim 1?
Additional Findings of Fact
6. Grow discloses “devices for detecting or monitoring or identifying
chemical or microbial analytes.… The gas or liquid medium to be monitored
or analyzed is brought into contact with a bioconcentrator which is used to
bind with or collect and concentrate one or more analytes.” (Grow, abstract.)
7. Grow discloses that the “bioconcentrator-analyte complex is then
exposed to radiation of one or more predetermined wavelengths to produce
Raman scattering spectral bands” (id.).
8. Grow discloses that “the bioconcentrator … may be immobilized
on a solid or porous supporting surface or within a film or porous medium
throughout the analyte binding and Raman analysis steps” (id. at col. 21,
ll. 1-4).
9. Grow discloses that the “supporting member may be rigid or
flexible and may even be porous, e.g., metallized filter paper” (id. at col. 44,
ll. 3-9).
Analysis
The Examiner finds that “Lee provides the teaching and motivation for
providing a third, supporting layer, to the filter/bioconcentrator layers of
Grow” (Answer 16).
Appellant argues that the combination of Grow and Lee does not
suggest the claimed “reagent layer” (Appeal Br. 7). Appellant argues that
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“combining Grow with Lee would only result in a flexible tape on a ‘support
membrane’ with a bioconcentrator on the flexible tape to capture sample”
(Reply Br. 5).
Appellant’s arguments are persuasive. Claim 1 requires that both the
“first dry filter layer” and the reagent layer are disposed on the strip and
extend longitudinally “on” the strip. That is, the claim requires the filter
layer and reagent layer to be arranged side-by-side on the strip, not on top of
each other. In the combination suggested by the Examiner, the reagent layer
is disposed on the filter layer and the filter layer is disposed on the strip or
support. Thus, the Examiner has not adequately explained how the cited
references suggest the system of claim 1 with both the filter layer and the
reagent layer disposed on the strip or support.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the combination of Grow and Lee would have made obvious the system
of claim 1.
SUMMARY
We reverse the rejection of claims 1-3, 12-13, and 22-26 under 35
U.S.C. § 102(e), and we reverse the rejections of claims 1-6 and 8-18 under
35 U.S.C. § 103(a).
REVERSED

Appeal 2010-010175
Application 10/962,477

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